Industrial designs are protected by Decree-Law 554, which has been in force since 1995. According to this law, registered design protection is available only for new and distinctive designs.
In addition to the national regulations, Turkey is a signatory to the following treaties and conventions relating to industrial designs:
- the Paris Convention for the Protection of Industrial Property (October 10 1925);
- the Berne Convention for the Protection of Literary and Artistic Works (January 1 1952);
- the Locarno Agreement Establishing an International Classification for Industrial Designs (November 30 1998); and
- the Hague Agreement Concerning the International Registration of Industrial Designs (January 1 2005).
Unregistered industrial designs are protected under unfair competition and copyright provisions. In this context, the Commercial Law, the Law on Intellectual and Artistic Works (5846) and in some cases the Civil Law can be enforced to protect unregistered industrial designs.
Copyright is an IP right that protects written, dramatic and artistic works. If a design is original and not copied from another source, it may automatically be subject to copyright protection. In such cases, the creation date of the industrial design is significant.
As a general rule, any dishonest commercial practice constitutes an act of unfair competition. Although this general rule may apply in many cases involving unregistered industrial designs, the protection afforded under it is much weaker than that afforded by registration.
Since it can be difficult to prove ownership of unregistered rights – especially in the absence of dated materials – registration is always recommended.
According to Article 13 of Decree-Law 554, rights to an industrial design are vested with the designer or his or her legal successors. If an industrial design is created jointly by multiple persons, the joint proprietorship provisions will apply, unless a contrary agreement exists among the parties.
Definition and requirements
The appearance of the whole or a part of a product can be registered as an industrial design. Industrial design registrations can also protect the ornamentation and aesthetic aspects of a product. These include features such as the product’s lines, colour, texture, shape and decoration.
Registered industrial design protection is granted to designs that are new and have individual character according to Article 5 of Decree-Law 554. In addition, designs of products that are parts of complex items can be protected if the design is new and has individual character.
The novelty requirement is set out in Article 6 of Decree-Law 554, which states that “[a] design shall be considered new if no identical design has been made available to the public in the world before the date of reference”. However, the law provides an exception to this rule in the form of a grace period – an industrial design application can be filed in Turkey within 12 months of the first public disclosure of the design.
The individual character of an industrial design is evaluated on the basis of the overall impression that it creates on the informed user.
With regard to the protection of spare parts, Article 22 of Decree-Law 554 states:
The use of the design by third parties, after 3 years from introducing the product incorporating the design or to which the design is applied, shall not be considered infringement of rights under the related provisions of this Decree-Law provided that the following conditions are met:
a) the product designed is part of a complex product upon whose appearance the design is dependent;
b) the use is for repair purposes so as to restore the original appearance of a complex product;
c) the public is not misled as to the origin of the product used for repair.
Registration fees for industrial designs vary depending on different criteria, such as the colour of the design, the number of designs submitted and possible priority claims. The official fees for design applications are available at www.tpe.gov.tr/TurkPatentEnsti.... Attorneys’ fees will also apply.
The registration process for industrial designs comprises six main stages:
- formal examination;
- opposition; and
Industrial design applications can be filed electronically or in hard copy. According to Decree-Law 554, the application should contain a petition which includes the applicant’s identifying information and an illustration (eg, drawing, painting, graphic, photograph or similar representation) of the design which is reproducible and reflects all of the design’s specific features.
The application must also contain a written description of the design and a list of the products into which the design is intended to be incorporated or to which it is intended to be applied. In this regard, industrial designs are classified according to the Locarno classification system.
Once filed, the industrial design application is examined for formalities only.
It is possible to claim protection for multiple designs in a single application, but the products should belong to the same sub-class or the same set or composition of items.
A registered design is protected for five years from the date of filing and is renewable for five-year periods, up to a total term of 25 years.
The Turkish Patent Institute (TPI) will refuse a design application that does not include an application form, drawings, a written description and the application fee. The TPI does not examine the novelty or individual character of a design; as such, a design search before filing the application is recommended.
Registration and publication
If the TPI concludes that there are no deficiencies in the application, it will be recorded in the Industrial Design Register and the filing date will be entered as the date, hour and minute on which the application was originally filed.
According to Decree-Law 554, an industrial design recorded in the register must be published in the relevant design bulletin and include the following information:
- the filing number, date of filing and priority date (if priority has been claimed);
- the identity of the rights holder;
- the identity of the designer or design team;
- an illustration (eg, drawing, painting, graphic, photograph or similar representation) of the design that reflects all of its specific features; and
- where a sample has been deposited, a reference to such deposit.
Publication may be deferred for up to 30 months from the application date.
Third parties may file an opposition against an industrial design registration with the TPI within six months of the publication date. Oppositions should fulfil the requirements stipulated in the regulations and the grounds for opposition should be clearly described. The opposition, together with its justification, is then communicated to the rights holder to enable it to submit views and observations.
The Re-examination and Evaluation Board of the TPI examines the submitted opposition documents to verify the rights holder or the novelty and individual character of the design.
If an opposition is not filed within six months or the filed opposition is refused, the certificate of design registration will be issued and forwarded to the applicant. Where the six-month opposition period has expired, the matter can be referred to the courts for cancellation or a declaration of invalidity of the design registration.
After registration, the rights holder may surrender all or part of its rights arising from the design registration. The surrender must be filed in writing with the TPI. Surrender will have effect as of the date of entry in the Industrial Design Register. The rights holder cannot surrender its rights without first obtaining the consent of any licensees or other holders of rights recorded in the Industrial Design Register.
The court will invalidate a registered design if it is proved that:
- the design is ineligible for protection under Decree-Law 554; or
- the relevant design rights actually belong to another person or persons.
Any person may request invalidity, with certain exceptions listed in Decree-Law 554.
A declaration of invalidity may be requested during the period of protection or within five years of termination of the design rights.
An unfair competition action may be initiated against possible infringement in order to prohibit use and request compensation. Registration gives the rights holder the exclusive right to protect its industrial design. For infringement of unregistered design rights, the rights holder may file suit before the courts based on unfair competition, although this provides fewer rights to the rights holder.
It is possible to file a civil or criminal action against infringement.
There are specialised civil and criminal IP courts in Ankara, Istanbul and Izmir. Apart from these, ordinary civil courts handle IP matters.
Both rights holders and authorised exclusive licensees may file infringement actions.
A rights holder whose rights have been infringed may request the following before the court:
- establishment of the existence of infringement;
- prohibition and prevention of infringement;
- remedies for the infringement and compensation for damages incurred;
- confiscation of infringing products (either produced or imported) and of equipment used to manufacture them;
- proprietorship over confiscated products in accordance with Sub-paragraph (d) of the decree-law – in this case the value of the products will be deducted from the compensation awarded. If the value of the products is more than the compensation awarded, the rights holder must repay the balance to the infringing party;
- enforcement measures to prevent further infringement, including destruction of infringing products and related equipment where necessary to prevent further infringement or alterations to confiscated products and equipment; and
- publication of the decision at the infringer’s expense.
In civil proceedings initiated by a rights holder, the competent court is the court of:
- the domicile of the rights holder;
- the place where the infringement was committed; or
- the place where the infringement had effect.
A plaintiff initiates an infringement action before the court by filing a writ of claims with a petition. After the action is filed, the assigned judge may appoint an expert to clarify any complex technical issues.
First-instance proceedings usually take around 18 months to complete. After issuance of the first-instance decision, adversely affected parties may appeal to the Supreme Court. In such case, the Supreme Court will fix the date for a hearing, at which both parties’ attorneys may clarify the merits of the appeal. The Supreme Court then decides on the approximate timeframe for the appeal – usually between six months and one year. The Supreme Court may ultimately annul or uphold the first-instance decision.
Unlike the civil procedure, in criminal proceedings the complainant is not a party to the action, but is rather involved as an intervener. Criminal proceedings usually take around two to three years to complete, including any appeal.
Alternative dispute resolution
The Code on Mediation in Legal Disputes on Certain Aspects of Civil Matters entered into force on June 7 2012. The code is enforceable for non-criminal IP matters. According to the code, both parties may decide to resolve the dispute before a registered mediator. The Official Register of Mediators can be accessed at www.adb.adalet.gov.tr/arabuluc....
Ownership changes and rights transfers
Rights deriving from an industrial design application or a registered industrial design may be assigned to third parties, inherited or licensed with effect in the whole or a part of the Turkish territory. A licence may be exclusive or non-exclusive.
Both assignments and licence agreements must be executed in writing. Registration of an assignment or licence agreement with the TPI is not a condition for the validity of the agreement; however, registration is required in order to make the transaction public and effective towards third parties.
Copyright is an IP right that protects written, dramatic or artistic works and exists automatically when the work is created. It prevents the work from being copied or used without the rights holder’s authorisation. To be eligible for copyright protection, the work must be original and have characteristic features attributable to the author. In this regard, owners of both registered and unregistered industrial designs benefit from copyright protection on the design.
If an industrial design has novelty and is capable of industrial application, it may also be protected as a utility model. According to Decree-Law 551, the term of protection for a utility model is 10 years from the filing date.
Unfair competition is a general concept that relates to all IP rights, as provided under the Commercial Law. As a general rule, any dishonest industrial practice constitutes an act of unfair competition.
Although unfair competition can be claimed as an additional argument in cases involving registered IP rights, the provisions on unfair competition are generally used in cases relating to infringement of unregistered industrial designs.
Ankara Patent Bureau Limited
Bestekar Sokak No 10
Tel +90 312 417 2323
Fax +90 312 425 5804
Ekin Karakus Öcal
Head of law department
Ekin Karakus Öcal joined Ankara Patent Bureau in 2011. She graduated from the Bilkent University Faculty of Law. She is a patent and trademark attorney and a member of the Ankara Bar Association as an attorney at law. She has been the manager of the firm’s law department since January 2014. Ms Karakus Öcal specialises in trademark, design, domain name and geographical indications, and advises on all legal matters relating to these areas. She is a frequent lecturer and speaker on IP matters, particularly geographical indications.
This article first appeared in Designs 2017: A Global Guide. For further information please visit www.worldtrademarkreview.com.